Santa Clara High Technology Law Journal Volume 31 | Issue 2 Article 4 January 2015 All That is Solid Melts Into Air: The ubjecS t-Matter Eligibility Inquiry in the Age of Cloud Computing Scott .T Luan Follow this and additional works at: http://digitalcommons.law.scu.edu/chtlj Part of the Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Scott .T Luan, All That is Solid Melts Into Air: The Subject-Matter Eligibility Inquiry in the Age of Cloud Computing, 31 Santa Clara High Tech. L.J. 313 (2015). Available at: http://digitalcommons.law.scu.edu/chtlj/vol31/iss2/4 This Article is brought to you for free and open access by the Journals at Santa Clara Law Digital Commons. It has been accepted for inclusion in Santa Clara High Technology Law Journal by an authorized administrator of Santa Clara Law Digital Commons. For more information, please contact [email protected]. 13_ARTICLE_LUAN (DO NOT DELETE) 4/30/2015 11:27 PM ALL THAT IS SOLID MELTS INTO AIR: THE SUBJECT-MATTER ELIGIBILITY INQUIRY IN THE AGE OF CLOUD COMPUTING Scott T. Luan† This article critiques and refines the subject-matter eligibility inquiry in patent law by examining the process of creativity in the context of software-implemented inventions. As a substantive critique of § 101 jurisprudence, this article, informed by copyright law, proposes a working hypothesis for a general structure of the subject- matter eligibility inquiry in which a critical determination is the appropriate level of abstraction for claim construction. As a discursive critique of the limits and limitations of judicial language, this article argues that courts have incorrectly presumed that contemporary legal thought is equipped, conceptually and linguistically, to understand the full significance of modern technologies and the grammars of their creation. Closely reading the human agency and design choices that inhere in technology, this article seeks to resolve the open questions posed by Mayo Collaborative Servs. v. Prometheus Labs., Inc., to harmonize Diamond v. Diehr and Parker v. Flook, and to refine Alice Corp. v. CLS Bank Int’l. † J.D., December 2014, The George Washington University Law School. BS, MS, Stanford University. The author is a patent examiner at the United States Patent & Trademark Office. The opinions expressed herein are those of the author and do not represent the official position, policy, or views of the Patent Office, the United States Department of Commerce, or the United States Government. The author will continue to perform his duties as a patent examiner in accordance with all applicable guidelines, rules, and regulations. I would like to thank Professors Dennis Karjala, Kenneth J. Rodriguez, Gerald J. Mossinghoff, and Ralph Oman for their helpful comments on this article. All errors are mine. 313 13_ARTICLE_LUAN (DO NOT DELETE) 4/30/2015 11:27 PM 314 SANTA CLARA HIGH TECH. L.J. [Vol. 31 TABLE OF CONTENTS INTRODUCTION ......................................................................... 315 I. OPEN QUESTIONS IN MAYO COLLABORATIVE SERVS. V. PROMETHEUS LABS., INC. ............................................... 322 II. ANALYSIS OF COMPUTER PROGRAMS IN COPYRIGHT LAW ............................................................................... 330 A. Abstraction–Filtration in Computer Associates Int’l, Inc. v. Altai, Inc. ..................................................... 331 B. Critique of Altai ..................................................... 334 1. Architecture of Buildings: The Structure of Physical Space .................................................. 334 2. Architecture of Software: The Structure of Conceptual Space ............................................. 340 III. SUBJECT-MATTER ELIGIBILITY IN PATENT LAW .......... 353 A. Mayo Revisited ...................................................... 353 B. The General Structure of the Patentable Subject- Matter Eligibility Inquiry ....................................... 356 IV. CRITIQUE OF ALICE CORP. V. CLS BANK INTL. ............... 359 A. Mayo’s Framework, Step 1: Level of Abstraction . 359 B. Technical Aspect of Mayo’s Framework, Step 2: The Search for the Inventive Concept ........................... 368 1. Method Claims ................................................. 368 2. System and Media Claims ................................ 371 C. Normative Aspect of Mayo’s Framework, Step 2: The Changing Nature of the Machine .................... 373 CONCLUSION ............................................................................ 381 TABLE OF FIGURES Figure 1. Adapter Pattern (Based on GoF, 139) ....................... 345 Figure 2. Command Pattern (Based on GoF, 233) ................... 346 Figure 3. Strategy Pattern (Based on GoF, 315) ...................... 348 13_ARTICLE_LUAN (DO NOT DELETE) 4/30/2015 11:27 PM 2015] SUBJ. MATTER ELIGIBILITY & CLOUD COMP. 315 INTRODUCTION For over two centuries, statutory language describing patentable subject matter has remained largely unchanged. The Patent Act of 1790 provided that “any useful art, manufacture, engine, machine, or device” is eligible subject matter.1 The Patent Act of 1793, adopting categories that are mostly operative today, provided that “any new and useful art, machine, manufacture or composition of matter” is patentable.2 More than 150 years later, the Patent Act of 1952 merely substituted the term “process” for “art.”3 The statutory language remains unchanged in the Smith–Leahy Act of 2011.4 The extraordinary constancy of the statutory language delimiting patentable subject matter is even more striking in the context of technological developments that span two centuries.5 The statutory 1. Patent Act of 1790, ch. 7, § 1, 1 Stat. 109, 109–12. 2. Patent Act of 1793, ch. 11, § 1, 1 Stat. 318, 318–23. 3. Patent Act of 1952, ch. 950, 66 Stat. 797 (1952) (codified at 35 U.S.C. § 101) (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). 4. However, the America Invents Act (AIA) provides that “no patent may issue on a claim directed to or encompassing a human organism.” See Leahy–Smith America Invents Act, Public Law 112-29, § 33(a), 125 Stat. 284 (to be codified in scattered sections of 35 U.S.C.). 5. Karl Marx’s prophetic vision of the revolutionary nature of modern technologies is worth quoting at length: The bourgeoisie cannot exist without constantly revolutionizing the instruments of production, and thereby the relations of production, and with them the whole relations of society. Conservation of the old modes of production in unaltered form, was, on the contrary, the first condition of existence for all earlier industrial classes. Constant revolutionising of production, uninterrupted disturbance of all social conditions, everlasting uncertainty and agitation distinguish the bourgeois epoch from all earlier ones. All fixed, fast-frozen relations, with their train of ancient and venerable prejudices and opinions, are swept away, all new-formed ones become antiquated before they can ossify. All that is solid melts into air . KARL MARX & FRIEDRICH ENGELS, THE COMMUNIST MANIFESTO 12 (Wildside Press LLC, 2008). Note also that the term “cloud computing” in the title of this article is merely a catchy marketing slogan for a decades-old technology utilizing the server-client networked architecture to provide Internet-based services. “Cloud technology” is catchy precisely because it expresses the widely-felt sense that our experience with computer technology has lost its solidity and concreteness. Articulation of this sense is more difficult than sloganeering. Notwithstanding the title, I will attempt to articulate this sense in my treatment of the developing jurisprudence on subject-matter eligibility. See, e.g., Katherine Hayles, The Condition of Virtuality, in LANGUAGE MACHINES: TECHNOLOGIES OF LITERARY AND CULTURAL PRODUCTION 183, 183–184 (Jeffrey Masten, Peter Stallybrass, & Nancy J. Vickers ed., 1997) (“Virtuality is the condition millions of people now inhabit . Let me offer a strategic definition. Virtuality is the cultural perception that material objects are interpenetrated by information patterns . When I say virtuality is a cultural perception, I do not mean it is merely a psychological phenomenon. It is also a mindset that finds instantiation in an array of powerful technologies. The perception facilities the development of the technologies, and the technologies reinforce the perception.”). 13_ARTICLE_LUAN (DO NOT DELETE) 4/30/2015 11:27 PM 316 SANTA CLARA HIGH TECH. L.J. [Vol. 31 language has survived the First and Second Industrial Revolutions6 and the Digital Revolution. As development of technology is heralding a Third Industrial Revolution,7 the statutory language remains seemingly transcendent. The apparent stability and clarity of the statutory language is made possible by the evolving jurisprudence on subject-matter eligibility. Courts have attempted to define extra-statutory exclusions to eligible subject matter by introducing ambiguous and equivocal terms.8 Until the twentieth century, these judicially-created exclusions were commonly articulated as laws, agencies, powers and properties of nature, principles, scientific facts, abstractions, naked ideas, mental processes, intellectual processes or operations, and conceptions of the mind.9 In a landmark decision that defines